Patent Office Issues Final Rule Adopting New Claim Construction Standard for AIA Trial Proceedings
Today, the United States Patent and Trademark Office issued a final rule changing the claim construction standard it uses for interpreting claim language in post-grant proceedings. The final rule abandons the Patent Office’s use of the broadest-reasonable-interpretation standard in favor of the Phillips standard, which governs the construction of claim terms in federal district courts and in the International Trade Commission (ITC). Under the Phillips standard, claim terms are construed according to their “ordinary and customary meaning” as understood by “a person of ordinary skill in the art…at the time of the invention.”
In addition, the rule change allows the Patent Office to receive and consider “prior claim construction determination[s] concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission.”
The new rule applies to all American Invents Act (AIA) review proceedings, including inter partes review (IPR), post-grant review (PGR), and covered business method patents (CBM) proceedings. It does not apply to patent applications and prosecutions, or to ex parte reexaminations. The new rule will apply only to petitions filed on or after November 13, 2018, and will have no retroactive effect.
According to the Patent Office, the change is aimed at “providing greater predictability and certainty in the patent system.” “Given the fact that 86.8% of PTAB proceedings have been the subject of litigation in Federal court, where parties are already using the Phillips standard, the Office reasonably anticipates expanding the use of the Phillips standard to all AIA trials should result in parties realizing some efficiency in the legal work required for their PTAB proceedings.” The prediction is that the rule change will “lead to greater consistency with the federal courts and the ITC,” “greater certainty as to the scope of issued patent claims,” and an increase in judicial efficiency by “eliminat [ing] arguments relating to different standards across fora.”
What does this mean for parties to a post-grant proceeding? The consistency across fora brought about by the Patent Office’s rule change will affect patent holders and patent challengers alike. Statements and arguments made in one proceeding are more likely to affect determinations in parallel or later proceedings. That consistency may also bear on the likelihood that a district court would stay an action based on a parallel proceeding at the Patent Office. Regardless of how it plays out, the immediate take-away is that parties to a post-grant proceeding before the Patent Office must now carefully assess how a claim construction position taken there may affect current and future infringement proceedings. Parties must also weigh how prior claim construction positions taken in district court or ITC proceedings will bear on future invalidity challenges before the Patent Office.
The Patent Office’s press release regarding the final rule can be found here.
If you have any questions about the rule change and its potential effects, please contact one of Honigman’s Intellectual Property attorneys.
 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
 Id. at 1312-13.
 United States Patent and Trademark Office, Department of Commerce; Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. Pt. 42).
 Id. at 51345.
 Id. at 51344.
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